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Friday, 16 March 2007

On 27 October last year, in the combined cases of Aerotel/Macrossan, Lord Justice Jacob noted that the decisions emanating from the Boards of Appeal of the European Patent Office on subject matter that is excluded from patentability were not of a uniform nature. He said:

"The decisions of the EPO Boards of Appeal are mutually contradictory. To say that is not to criticise anyone. On the contrary the Boards of Appeal have each done what they think is right in law – as befits tribunals exercising a judicial function. But surely the time has come for matters to be clarified by an Enlarged Board of Appeal. Under Art.112(1)(b) of the EPC the President of the EPO has the power to refer a point of law to an Enlarged Board where two Boards of Appeal have given different decisions on that question. That is now clearly the position. There are indeed at least four differing points of view. We have no power to refer any question and must reach our decision now independently of what any Enlarged Board might decide if and when there is a reference. Nonetheless we have ventured to formulate questions which might be asked of an Enlarged Board in the hope of encouraging a reference. We add that the Comptroller supports us in this course".

Well, here's the text of the reply by President Pompidou (right) of Epoland to Lord Justice Jacob (with the sincere bits at the end omitted).

Re Court of Appeal Judgment [2006] EWCA Civ 1371

Dear Lord Justice Jacob,

I am writing to you to let you know that the above-mentioned decision has led to a discussion within the EPO as to the possibility of referring questions regarding the exclusions to patentability set out in Article 52(2) EPC to the Enlarged board of Appeal.

On the basis of these discussions I have decided that at the moment there is an insufficient legal basis for a referral under Article 112(1 )(b) EPC. Leaving aside Board of Appeal case law the line of reasoning of which has been abandoned by later case law, I believe there are insufficient differences between current Board of Appeal decisions dealing with Article 52 EPC exclusions on important points of law that would justify a referral at this stage.

This of course does not mean that a clarification of certain issues by the Enlarged Board of Appeal would not be welcomed. The EPO will continue to monitor case law closely, whereby I believe the appropriate moment for a referral would be where the approach taken by one Board of Appeal would lead to the grant of a patent whereas the approach taken by another Board would not.

The IPKat thinks this is an opportunity missed. An Art.112(1)(b) reference, made before the next contested patent application hits the EPO, would at least enable the Enlarged Board to consider the issues relating to excluded subject matter without coming under the pressures on a live, contested application. Also, it would enable applicants to know more swiftly and easily whether it would be worth expending effort and resources on a borderline invention. Merpel says, I'd like to know more about the "insufficient legal basis". Perhaps Monsieur le President's reading of the EPO decisions can be called upon as an interpretational aid that can help reconcile approaches which appear, to the North of the Channel, to be in conflict. [Whoops - nearly forgot to thank James Heald, UCL, for drawing his attention to this].

7 comments:

Anonymous
said...

"Leaving aside Board of Appeal case law the line of reasoning of which has been abandoned by later case law"???

I thought that was the whole point? How can the EPO Boards, which are not binding on one another, simply decide that they want to follow one "line of reasoning" rather than another, unless they are guided by an Enlarged Board decision? Also, how are we to know whether a patent application would have been granted under one line of reasoning but not another?

This is a pathetic, pompous and rather arrogant cop-out from M Pompidou. Thankfully, we will soon rid of him and his ineffectualness. Let's hope we get a bit more sense from Alison Brimelow when she takes up the position in July.

Wouldn't you like to be a fly on the wall when P. Pompidou discusses such issues with VP DG3 Messerli? Does either of these two gentlemen possess an in-tray labelled "Too difficult". But what if Frau Brimelow were to place her CII reference into the in tray of the EBA. TBA Chairmen falling out with each other, at the EBA sitting? Not good. Anyway, why be so pessimistic. Intellectually, Jacob LJ's line is better than the Stuttgart line, that inventive isn't inventive unless it's inventive in a technical way. So, if the TBA world is rational, it will converge anyway on the Jacob line (Darwinian evolution of the legal line best fitted to survive) without the need for involving the EBA.

David, will you give the TBA's no credit whatsoever? On the "old" problems,of "disclosure" "novelty" "inventive step" "selection invention" "new matter" "clarity" "sufficiency" do we not have out of the EPO, in 25+ years of jurisprudence, a reasonably rational corpus of law with reasonable legal certainty. Give them another 25 years and we will have a rational line on CII. Perhaps?

Simply because CII wasn't a hot topic for the first 15 EPO years, and now it is. Everybody is talking about the underlying logic of Aerotel/Macrossan, so even the TBA gentlemen in their ivory tower can't ignore it completely. It will have an effect. The substantial time it will take can be put down to the imperative that there shall be nobody who loses face. But that won't take another 25 years. The other patent law issues got sorted out earlier because they were problematic and universal, from the 1978 outset. Even now, many in Germany don't see the need to keep novelty and obviousness separate, but that battle has long ago been fought and won in the TBA's of the EPO.

I have read the Macrossan decision and it seems to constitute a great step in deviating from the EPO's rulings. Does this mean that in effect UK's rules with regards to business method patents are more stringent than that of Europe? And if so, where does this leave UK companies who aren't able to obtain a patent in the UK? should they look for applying them in the EPO and US?

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